use independent judgment in defining the purpose and target group of a litigation survey. Unlike a marketing survey, usually in the hands of advertising agencies or marketing specialists, the context of litigation surveys to a large extent must necessarily be directed by lawyers who are familiar with the litigation at hand. There has been extensive lawyer participation on both sides in this case.
The term "generic description" may be ambiguous as Dr. Sorensen said, but Dr. Sorensen did not disagree with the manner in which the respondents distinguished between brand names and generic descriptions. 14-2660:24-2663:11.
The objections predicated on a suggestion that numbers alone cannot be a brand name and that respondents were led to believe that they were descriptions and not brand names are quibbles. There is no evidence other than that of Dr. Sorensen and his testimony is not persuasive to me on those issues.
Question 8 of the Questionnaire is the key question and asked each respondent "Would you say is the brand name or a generic description?" The question was asked with respect to each of five separate terms, one of which was 386. The order of the terms was rotated, so that no term kept its original position in the order of questioning at all times.
The result of the survey was that of 400 total interviews 72% of respondents stated that 386 is a generic description, 21% of respondents stated that 386 is a brand name, and 7% of respondents didn't know whether 386 is a generic description or a brand name.
If a properly conducted survey shows that 72% of the relevant public regards a combination as generic, then that is its principal significance, and a court is justified in according substantial weight to such a survey. King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2nd Cir. 1963); Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 639 (8th Cir. 1984); Dupont, supra.
The Walker Survey is an important piece of evidence because it was concerned with OEMs, the group that I have found to constitute the relevant market. It is the only survey in evidence which is directed at that group. Plaintiff has not undertaken a survey of the OEM market.
I find that the Walker Survey was competently conducted, taken of a sample of the relevant market, is projectable and is uncontradicted.
The evidence shows that within plaintiff corporation's organization in 1988, and thereafter, there was a consciousness that the combination 386 was being perceived by others as a product description and not as a brand name.
Ms. Tsuyemura, plaintiff's Trademark Program Manager informed people both inside and outside plaintiff's organization structure that the designation of the part number 80386 was a generic term. 12-2172:16-21; Ex. BA; Ex. BB. Prior to 1988 the chief executive officer of plaintiff corporation was concerned over the fact that the 386 combination was in use in the advertising of computer manufacturers without attribution to plaintiff in any way. Ex. DE, 5-955:7-956:3. There were references within plaintiff's corporate organization to a "take back the 386 name campaign." 6-1158:3-1159:7; Ex. BK; Ex. BL. Although many of plaintiff's witnesses denied the existence of such a campaign, or referred to it as "hallway jargon" I do not find these denials wholly credible in the circumstances.
While these evidentiary items do not have great significance in themselves, they do illustrate a conscious apprehension within plaintiff's organization that the combination 386 and the part number 80386 were by 1988, and perhaps before, generic names, at least among users of personal computers. The Benchmark Survey, Ex. 38, and its results have primary reference to a business end user group, as distinguished from an OEM group, and will therefore be discussed in my subsequent opinion.
Industry practice for a number of years had been to refer to microprocessors in the family lineage of the 386 (Ex. FR) by a contraction or diminutive for the microprocessor part numbers; i.e. "286" for 80286, "386" for 80386. 8-1414:10-21. The practice arose out of the custom of "second source" manufacturers in the naming of their products. 8-1405:4-22. The combination 386 and the part number 80386 are historically used and presently interchangeable among OEMs and do not connote a particular vendor but are used generically among OEMs. 8-1419:10-17.
Plaintiff has not proven by a preponderance of the evidence that the combination 386 is not generic. To the contrary the evidence, primarily the Walker Survey, shows that it is generic in the relevant OEM market.
The combination 386 is not entitled to trademark protection, and in consequence there can be no infringement thereof.
McCarthy, supra, § 12.1
Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011 (9th Cir. 1979).